Posts Tagged: "patent eligibility"

It is time to set the record straight. For reasons I don’t understand, many inventors are just not being truthful about the provisions of patent reform bills now pending in Congress. In fact, some in the independent inventor community are attempting to rally support to kill the overwhelmingly pro-patent, pro-innovation, patent eligibility bill now pending. This is an enormous mistake that will have tragic consequences unless those who have the most to lose become willing to accept a win, even if that win does not provide them with 100% of what they want.

U.S. patent practitioners have had a rocky relationship with the once-straightforward patent eligibility requirement under 35 U.S.C. 101 in recent years. Decisions such as Mayo and Alice upended the status quo, muddying the threshold test for patent subject matter eligibility. When dealing with difficult 101 rejections under this new status quo, it can sometimes help to think outside of the box about how to overcome a given rejection. This article presents a potential unlabeled “Step Zero” of the Subject Matter Eligibility Analysis which could help you overcome or avoid 101 rejections.

Recently, it has come to my attention that a system that utilizes a camera to capture images and software to run facial recognition is being rejected by the United States Patent and Trademark Office (USPTO) as an abstract idea. Why? Well, it unfortunately seems that the reason is simply because the purpose of this very tangible, working system is to identify people and charge them a fare. Because money is overtly involved, for reasons that make no rational sense, this is being deemed a business method, despite the facial recognition technology—and even though this is a clean, streamlined approach for conducting commerce.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today affirmed a district court’s dismissal of Realtime Data, LLC’s patent infringement claims based on invalidity of the asserted claims under 35 U.S.C. § 101. In a previous ruling, the CAFC sent the case back to the district court asking for a more fleshed out Section 101 analysis. Judge Pauline Newman dissented to today’s judgment, calling current eligibility jurisprudence a “morass” and saying she would have remanded the case for determination of validity under Section 112, or possibly Sections 102 and 103.

Today, the Information Technology & Innovation Foundation (ITIF) published a white paper titled Innovation Wars: How China Is Gaining on the United States in Corporate R&D showing that, while the United States continues to enjoy a lead in several key sectors when surveying the world’s largest corporate investors in research and development (R&D), its largest economic rival is gaining and could achieve parity with the U.S. in about a decade.

Patent eligibility challenges under 35 U.S.C. § 101 have been effective tools at the pleading stage for parties defending allegations of patent infringement. Defendants often attempt to avoid the costs of litigation by filing a motion to dismiss under Federal Rule of Civil Procedure (“FRCP”) 12(b)(6), seeking to invalidate the asserted patent(s) on the grounds that the claims are directed to ineligible subject matter — such as an “abstract idea.” Previously, a key tactic for plaintiffs to overcome such “Section 101 motions” was by amending the complaint and annexing an expert declaration. Recently, however, this strategy has been called into question due to a recent decision in Marble VOIP Partners LLC v. Zoom Video Communications, Inc.,

On July 17, inventor advocacy organization US Inventor and conservative interest group Eagle Forum Education and Legal Defense Fund filed a joint amicus brief at the U.S. Supreme Court urging the nation’s highest court to grant the petition for writ of certiorari filed in Killian v. Vidal. US Inventor and Eagle Forum ELDF’s brief is the latest call upon SCOTUS to address the “dire consequences” flowing from the dramatic expansion to judicial exceptions to patent eligibility under 35 U.S.C. § 101.

On July 14, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in SNIPR Technologies Limited v. Rockefeller University reversing a decision by the Patent Trial and Appeal Board (PTAB) that invalidated all claims from five SNIPR patents. In reversing, the Federal Circuit found that the PTAB erroneously subjected SNIPR’s patents to interference proceedings that Congress meant to eliminate when it enacted the America Invents Act (AIA) of 2011.

In a precedential decision authored by Judge Tiffany Cunningham on Friday, the U.S. Court of Appeals for the Federal Circuit (CAFC) ruled that two patents for methods of connecting users based on their answers to polling questions were directed to patent ineligible subject matter under 35 U.S.C. § 101. U.S. Patent Nos. 9,087,321 and 10,936,685 are owned by Trinity Info Media, LLC and are titled “Poll-Based Networking System.” The U.S. District court for the Central District of California granted Covalent, Inc.’s motion to dismiss under Rule 12(b)(6), finding that the claims were directed to the abstract idea of “matching users who gave corresponding answers to a question” and did not contain an inventive concept.

On July 11, the Council for Innovation Promotion (C4IP), released a policy report advocating for a pro-innovation legislative and administrative agenda to counteract a series of shocks to the U.S. patent system over the past two decades. This pro-innovation agenda has the direct support of several C4IP members who formerly held high-ranking government positions and are now calling on the federal government to correct several areas of patent law that have improperly tilted the playing field in favor of corporate infringers and foreign counterfeiters.

On the evening of July 5, inventor advocacy group US Inventor hosted a webinar to discuss the Patent Eligibility Restoration Act (PERA) recently introduced into the U.S. Senate by Senators Thom Tillis (R-NC) and Chris Coons (D-DE). The featured guest speaker was Retired U.S. Court of Appeals for the Federal Circuit Chief Judge Paul Michel, who has been involved in the development of PERA’s draft legislative text and has personally supported PERA as an important step in “reviv[ing] the faltering U.S. innovation system” by abrogating the series of U.S. Supreme Court rulings that greatly expanded judicial exceptions to patent eligibility under 35 U.S.C. § 101.

Last week was a big one for the potential future of the U.S. patent system. The deadline for comments on the U.S. Patent and Trademark Office’s (USPTO’s) Advance Notice of Proposed Rulemaking (ANPRM) on “Discretionary Institution Practices, Petition Word-Count Limits, and Settlement Practices for America Invents Act Trial Proceedings before the Patent Trial and Appeal Board [PTAB]” was Tuesday, June 20…. Then, on Thursday, Senators Thom Tillis (R-NC), Chris Coons (D-DE), with some help from their colleagues, introduced two new bills that would have major implications for patent eligibility law and PTAB practices, respectively. Below are some other perspectives from a range of IP stakeholders.

Last week, Senators Chris Coons (D-DE) and Thom Tillis (R-NC) launched the long-awaited legislative campaign to revive the faltering U.S. innovation system, jointly introducing one bill to restore patent eligibility and another to boost patent reliability at the Patent Trial and Appeal Board (PTAB).  As the chair and ranking member of the Senate subcommittee on Intellectual Property, they are well-positioned to move these bipartisan bills forward. They got assists from Senators Dick Durbin (D-IL) and Mazie Hirono (D-HI), who joined as original co-sponsors on the PREVAIL Act. While Coons and Tillis are well-placed, Durbin is even more so as he chairs the Judiciary Committee and serves as the number two leader of the majority party.

As predicted by retired United States Court of Appeals for the Federal Circuit Chief Judge Paul Michel last month, Senators Chris Coons (D-DE) and Thom Tillis (R-NC) have introduced the first of what Michel said will be multiple bills aimed at fixing the U.S. patent system. Today’s bill, the Patent Eligibility Restoration Act of 2023, would eliminate all judicially-created exceptions to U.S. patent eligibility law.